Section 3

Inventive step

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3. An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).

Notes:
Manual of Patent Practice
The 4 step test from Windsurfing International Inc v Tabur Marine [1985] RPC 59 (pp 73-74):

  • "There are, we think, four steps which require to be taken in answering the jury question [of obviousness]. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being 'known or used' and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention".

This test was restated in Pozzoli v BDMA, [2007] EWCA Civ 588 (22 June 2007) (para 23):

  1. (a) Identify the notional "person skilled in the art"
  2. (b) Identify the relevant common general knowledge of that person;
  3. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
  4. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
  5. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

PLG Research v Ardon [1995] RPC 287:

  • "The philosophy behind the doctrine of obviousness is that the public should not be prevented from doing anything which was merely an obvious extension or workshop variation of what was already known at the priority date."

In Philips' (Bosgra's) Application [1974] RPC 241 it was pointed out that the source of the word "obvious" is the Latin "ob via", literally "lying in the road", and it was said:

  • "These (emulsifying) agents were obvious in this sense, indeed in the true sense of the word, that they were lying in the road, they were there for the research worker to use, and it is quite wrong that he should be stopped from using them."

In Conor Medsystems Inc v Angiotech Pharmaceuticals Inc & Ors [2008] UKHL 49, relating to Taxol-coated stents for preventing restenosis, Lord Hoffman, in overturning the previous decision of the Court of Appeal, stated:

  • "The question was whether [using a taxol-coated stent to prevent restenosis] was obvious and not whether it was obvious that taxol (among many other products) might have this effect. It is hard to see how the notion that something is worth trying or might have some effect can be described as an invention in respect of which anyone would be entitled to a monopoly. It is therefore perhaps not surprising that the test for obviousness which Pumfrey J [in the High Court] devised for such an "invention" was whether it was obvious to try it without any expectation of success. This oxymoronic concept has, so far as I know, no precedent in the law of patents".
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